The 21st Century has always been about computers, software and the internet. The very first time a stored-program computer held a piece of software in electronic memory and executed it successfully, was 21st June 1948, at the University of Manchester, on the Manchester Baby computer. Do you know what was it for? That software calculated the highest factor of the integer 2^18. Looking at the progress in the field of software it is evident that we have come a long way. Today we are entering the industrial revolution 4.0 which is powered by Artificial Intelligence (AI).
Being an IP enthusiastic, I like to look at the development from an intellectual property perspective. Under the Copyright Act, 1957 the software is granted copyright protection unless it leads to a technical effect and is not a computer program per se. So generally, the software which doesn't have a technical effect is granted protection under the copyright regime. The threshold criteria to qualify for that protection is that the computer software needs to be original and sufficient effort and skill must have been imparted to create it. If computer software only generates multiplication tables or algorithms that may not suffice the test of “sufficient effort” required for the protection. Apart from being original, the work should be first published in India or if the work is published outside India the author on the date of publication or if the author is dead at the time of his death should be the citizen of India1.
Coming to the question of whether the software can be granted patent protection or not. In United State software is eligible for patent protection and the recent decision of the Federal Circuit clearly is paving the way for granting patent protection to the software. These inventions are referred to as “computer-implemented process”. The software can be protected in the U.S. if it is unique and tied to a machine. The software is also required to have some identifiable improvement which is non-obvious to the person skilled in the art. The “unique” requirement is another way of saying that invention must be novel and non-obvious, which are basically the patentability requirements for any invention.
Last decade, the issue of patentability of software in the United States was in flux. The issue was largely settled in the case of Bilski v. Kappos2, which was decided by the United States Supreme Court in the year 2010. The issue before the Supreme Court was whether the “machine-or-transformation” test is the only test for patent eligibility under 35 U.S.C 101. The Supreme Court overturned the Federal Circuit's “machine-or-transformation” test, which required that patentable process either be tied to a machine or apparatus or it should involve the transformation of a particular article into a different state or thing as the sole test for what constitutes a process. Another important case, Alice Corp. v. CLS Bank3 where the Supreme Court articulated a two-step test for determining whether particular software is patentable or not, reshaped the test for the patent-eligible subject matter. Both the decisions didn't shut the door to software-based patenting or business method patenting but only made scrutiny stronger.
In India, the software industry is one of the fastest-growing industries and a pace of technological development and advancements in the field of software has made it essential to protect the intellectual property vested in the software, program and all those machines which use the programs and software. According to RBI's annual report, the export of India's software services stood at Rs. 4,854.6 billion in 2015-16, which constituted nearly 48 per cent of total services export of India and stood at around 3.6 percent of GDP 4. India's approach towards software patentability is quite parallel to the EU's approach. Under Art. 52(2) of EPC 5, a list of items is provided which are not considered to be inventions in the field of technology as they are in themselves considered non-technical, but to make it more complicated, these items are only excluded from patentability if they are claimed “as such” according to Art. 52(3) EPC 6. The Board of Appeal of the European Patent Office has created a reliable framework for implementation of these complicated legal provisions called the “two-hurdle” approach. The two hurdles that any software patent has to overcome are Patent-eligibility and Inventive step. Apart from these requirements, under Art. 83 EPC 7, the software patent claims should also disclose the invention in a sufficiently clear and complete manner. Similarly, the grant of a software patent is also possible in India if the software patent is embedded software in a mobile application, and/or software plus hardware combination.However, the Indian Patent Act doesn't allow patent protection for software per se, as it is prohibited by Section 3(m) of the Indian Patent Act 8.
CSIR came up with the guidelines for examination of computer-related inventions in 2016. These guidelines discuss various provisions relating to the patentability of computer-related inventions. The following points are needed to be objectively judged to ascertain whether, looking at the invention as a whole, the invention does have an inventive step or not9:
- Identify the “person skilled in the art”, i.e., competent craftsman or engineer distinguished from a mere artisan;
- Identify the relevant common general knowledge of a person skilled in the art at the priority date;
- Identify the inventive concept of the claim in question;
- Identify the differences that exist between the matter cited as forming the part of the “state of art”.
- Identify the steps which are obvious to the person skilled in the art.
So, only because the software is code, it nowhere means that the software cannot be patented as the 21st century is that of the internet which is wholly based on the code. India is a developing nation which has 66 million population accessing the internet and it's growing faster than ever. Due to the presence of a large pool of IT outsourcing companies, India holds the largest talent pool for software on the patent. Thus, the government is required to dive deeper into aspects of software patenting and encourage laws that enable the smooth grant of software patents.
1 Section 13(2)(i) of the copyright Act, 1957.
2 Bilski v. kappos 561 u.s. 593
4 Reserve Bank of India – RBI Bulletin, , https://www.rbi.org.in/Scripts/BS_ViewBulletin.aspx?Id=16565..
5 Article 52 – Patentable inventions – The European Patent Convention, Convention on the Grant of European Patents – (European Patent Convention), Part II – Substantive patent law, Chapter I – Patentability, , https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar52.html.
7 Article 83 – Disclosure of the invention – The European Patent Convention, Convention on the Grant of European Patents – (European Patent Convention), Part III – The European patent application, Chapter I – Filing and requirements of the European patent application, , https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar83.html.
8 Section 3(m), Indian Patent Act, 1970.